Appeal No. 1999-0660
Application No. 08/312,406
New Ground of Rejection
Under the provisions of 37 CFR § 1.196(b), the following new ground of rejection
is entered against claims 1 through 10:
Claims 1 through 10 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite and hence failing to particularly point out and distinctly claim the subject
matter which appellant regards as his invention. Our difficulty with the claim language
centers on the following recitation in claim 1:
said forming member including an outer surface portion which is
unbonded to said sheath and unsupported thereby and spaced from intimate
contact therewith with the internal passageway of said sheath and said outer
surface portion of said forming member being in opposed facing and spaced
relationship with said outer tubular sheath . . .
The foregoing claim limitation is rendered incomprehensible by the phrase “with
the internal passageway of said sheath.” Perhaps this phrase should have been deleted
when claim 1 was amended in the amendatory paper filed April 8, 1996, but it would be
speculation on our part to conclude that appellant intended to omit this phase. In the final
analysis, appellant must recite what he regards as his invention. See 35 U.S.C. § 112,
second paragraph.
In summary, the examiner’s decision rejecting the appealed claims is reversed,
and a new ground of rejection has been entered against the appealed claims pursuant to
37 CFR § 1.196(b).
This decision contains a new ground of rejection pursuant to 37 CFR § 1.196(b)
(amended effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct.
10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR
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